International Harmonization of Patent Law: A Proposed Solution to the United States

As trade barriers diminish and global economies continue to expand, harmonization and enforcement of international patent protection becomes increasingly important. This note compares the U.S. system with other countries. It argues that the U.S. should harmonize with the rest of the world. Part I discusses the different systems for determining priority of invention and the recent movement towards harmonization of patent law. Part I also sets forth the recommendations of the 1992 Advisory Commission on Patent Law Reform relating to first-to-file. Part II presents the various conflicting arguments both in favor of and against adopting a first-to-file system. Part III argues that the United States should adopt a first-to-file system under the conditions specified in the 1992 Report From the Advisory Commission on Patent Law Reform. This Note concludes that the Commission Report presents a favorable solution to the first- to-file debate that will allow the United States to participate in and benefit from the forthcoming patent harmonization treaty.

International Harmonization of Patent Law: A Proposed Solution to the United States

FORDHAMINTERNATIONAL LA WJOURNAL
Fordham International Law Journal
-
1992
Article 5
Copyright c 1992 by the authors. Fordham International Law Journal is produced by The
Berkeley Electronic Press (bepress). http://ir.lawnet.fordham.edu/ilj
First-to-File Debate
Vito J. DeBari
As trade barriers diminish and global economies continue to expand, harmonization and
enforcement of international patent protection becomes increasingly important. This note compares
the U.S. system with other countries. It argues that the U.S. should harmonize with the rest of the
world. Part I discusses the different systems for determining priority of invention and the recent
movement towards harmonization of patent law. Part I also sets forth the recommendations of the
1992 Advisory Commission on Patent Law Reform relating to first-to-file. Part II presents the
various conflicting arguments both in favor of and against adopting a first-to-file system. Part III
argues that the United States should adopt a first-to-file system under the conditions specified in
the 1992 Report From the Advisory Commission on Patent Law Reform. This Note concludes that
the Commission Report presents a favorable solution to the first- to-file debate that will allow the
United States to participate in and benefit from the forthcoming patent harmonization treaty.
INTERNATIONAL HARMONIZATION OF PATENT LAW:
A PROPOSED SOLUTION TO THE UNITED
STATES' FIRST-TO-FILE DEBATE
INTRODUCTION
As trade barriers diminish and global economies continue
to expand, harmonization and enforcement of international
patent protection becomes increasingly important. Adequate
and effective international patent protection is an important
factor toward the development of domestic industries, the
stimulation of foreign investment, and the enhancement of
free and fair trade.' In the United States, strong international
patent protection will encourage inventors to expand their
markets globally and will reduce the substantial costs
associated with obtaining such protection and enforcing against its
infringement. 2 The U.S. system of patent protection, however,
differs significantly from those of other countries throughout
the world.3 This difference may impede the United States'
participation in patent law harmonization.'
When two or more inventors in the United States wish to
obtain a patent on the same invention, the United States
Patent and Trademark Office (the "Patent Office") awards the
patent to the person who is the first inventor, regardless of who
actually files a patent application first.5 This system of
determining priority of invention is known as the "first-to-invent"
system, and has been used by the Patent Office for over 150
years.6 Nearly every other country in the world utilizes a
"firstto-file" system, which establishes priority of invention on the
basis of the earliest effective filing-date of a patent application
1. THE ADVISORY COMMISSION ON PATENT LAW REFORM, A REPORT TO THE
SECRETARY OF COMMERCE 3 (1992) [hereinafter COMMISSION REPORT].
2. See Bernarr R. Pravel, Why the United States Should Adopt the First-to-File System
ForPatents, 22 ST. MARY'S L.J. 797 (1991) (discussing benefits of patent law
harmonization).
3. 2J.W. BAXTER, WORLD PATENT LAW AND PRACTICE 14-2 (1992)
4. COMMISSION REPORT, supra note 1, at 11.
5. 35 U.S.C. §§ 101, 102(g) (1988) (setting out what constitutes patentable
inventions and how priority of invention is determined when more than one inventor
seeks patent for invention).
6. Patent Act of 1836, ch. 357, § 6, 5 Stat. 117, 119 (formally establishing patent
statutes that award patents on basis of priority of invention).
disclosing and claiming an invention.7
The issue of whether the United States should adopt a
first-to-file system has been the subject of debate for many
years. 8 The debate recently has intensified, however, in light of
the proposed adoption of an international patent
harmonization treaty9 ("Draft Treaty") that provides for a first-to-file
system of determining priority.' 0 The United States' participation
in such a treaty is contingent upon abandonment of its current
first-to-invent system and adoption of a first-to-file system."
This requirement has caused commentators and practitioners
to question whether participation in the harmonization treaty
is worth the price of converting to a first-to-file system.2
An Advisory Commission on Patent Law Reform
addressed several harmonization-related issues in a report
presented to the U.S. Secretary of Commerce on September
14, 1992.'" One of those issues concerned whether the United
States should adopt a first-to-file system of priority.' 4 In the
report, the Commission recommended that the United States
adopt a first-to-file system. 15 Such an adoption would be
contingent upon completion of a global patent law harmonization
treaty that would provide an overall benefit to U.S. interests.' 6
This Note argues that the United States should adopt a
first-to-file system that will enable it to participate in the
proposed harmonization treaty, under the conditions specified in
the report from the 1992 Advisory Commission on Patent Law
Reform ("Commission Report"). Part I discusses the different
systems for determining priority of invention and the recent
movement towards harmonization of patent law. Part I also
sets forth the recommendations of the 1992 Advisory
Commission on Patent Law Reform relating to first-to-file. Part II
presents the various conflicting arguments both in favor of and
against adopting a first-to-file system. Part III argues that the
United States should adopt a first-to-file system under the
conditions specified in the 1992 Report From the Advisory
Commission on Patent Law Reform. This Note concludes that the
Commission Report presents a favorable solution to the
firstto-file debate that will allow the United States to participate in
and benefit from the forthcoming patent harmonization treaty.
I. PRIORITY OF INVENTION AND PA TENT LA W
HA RMONIZA TION
The United States' system of determining priority of
invention between two or more inventors is unlike the system
used by most other countries.' 7 This distinction is one of the
main issues in controversy in the development of an
interna13. COMMISSION REPORT, supra note 1, at 11. This Commission was established
in 1990 by the Secretary of Commerce. Id. at i; see Patent and Trademark Office: Patent
Advisory Commission Urges FundamentalPatent Law Reforms, [May-Oct.] Pat. Trademark,
& Copyright J. (BNA) No. 1097, at 490 (Sept. 17, 1992) (discussing COMMISSION
REPORT and recommendations).
14. COMMISSION REPORT, supra note 1, at 11.
15. Id.
16. Id.
17. See id. at 43 (discussing how other countries utilize first-to-file system).
tional patent law harmonization treaty, and appears to be the
determining factor as to whether the United States will
participate in such a treaty.' 8 In light of these developments, the
Advisory Commission on Patent Law Reform agreed to study
many of the issues related to the worldwide harmonization of
patent laws as part of its broader study of the U.S. patent
system.1 9 The Commission specifically addressed whether the
United States should change its system of determining priority
to conform with that of the rest of the world.20
A. Diferent Systems for Determining Priority of Invention
The first-to-invent system of priority used by the United
States allows an inventor who has not abandoned, suppressed,
or concealed his invention to obtain a patent against another
person who filed a patent application first if the original
inventor can prove that he was the first to invent the particular
invention.2 To prove priority of invention, inventors must
prove that they were the first to conceive the invention and the
first to reduce it to practice. 2 Alternatively, if they were not
the first to reduce the invention to practice, they must prove
that they were the first to conceive it and that they were
diligent in reducing the invention to practice from a point in time
prior to another inventor's conception of it.23 If there is a
dis18. See CONFERENCE REPORT, supra note 9, at 14 (commenting on results of First
Session of Diplomatic Conference).
19. COMMISSION REPORT, supra note I, at 11.
20. Id. at 11-12.
21. 35 U.S.C. § 10 2(g) (1988). This section of the patent statutes provides that
A person shall be entitled to a patent unless
(g) before the applicant's invention thereof the invention was made in this
country by another who had not abandoned, suppressed, or concealed it. In
determining priority of invention there shall be considered not only the
respective dates of conception and reduction to practice of the invention, but
also the reasonable diligence of one who was first to conceive and last to
reduce to practice, from a time prior to conception by the other.
Id.
22. Id.
23. Id. Reduction to practice can be "actual" or "constructive." Actual
reduction to practice is a physical construction of the invention, and constructive reduction
to practice is the filing of a U.S. patent application. See PATENT AND TRADEMARK
OFFICE, U.S. DEP'T OF COMMERCE, MANUAL OF PATENT EXAMINING PROCEDURE ch. 715.07
(5th ed., 13th rev. Nov. 1989) [hereinafter MPEP]. Both forms are acceptable by the
Patent Office for the purposes of determining priority of invention. Id. Also, under
PA TENT LA W HA RMONIZA TION
pute as to who the first inventor is, the process of determining
priority of invention is accomplished through an "interference
proceeding" before the Patent Office Board of Patent Appeals
and Interferences (the "Board of Appeals"). 24 After a decision
by the Board of Appeals, dissatisfied parties may appeal to the
United States Court of Appeals for the Federal Circuit,25 or
they may bring a civil action.26
In contrast, nearly every other country in the world
utilizes a first-to-file system that establishes priority on the
basis of the first effective filing date of a patent application. 7
The only countries other than the United States who are
currently utilizing a first-to-invent system are Jordan and the
Philippines. 21 In addition, legislation pending in the Philippines
will introduce a first-to-file system there.29 Canada had been
the last democratic, capitalistic, developed nation other than
the United States to use a first-to-invent system.3 0 In 1989,
however, Canada followed the rest of the world and converted
to a first-to-file system. 1
the patent statute, the inventive acts used to establish priority must occur in the
United States. 35 U.S.C. § 102(g) (1988); see MPEP, supra, ch. 715.07.
24. 35 U.S.C. § 135(a) (1988); see MPEP, supra note 23, ch. 1100; see also RONALD
B. HILDRETH, PATENT LAw: A PRAcrITIONER'S GUIDE 107-15 (1988) ("An
interference is frequently an expensive and extensive proceeding . . . before the United
States Patent and Trademark Office for determining who is the prior inventor of the
same invention, i.e., which inventor should be awarded priority."). An interference
is a relatively complex trial-like procedure in which the parties are permitted to take
testimony, produce documents, etc. before the Patent Office Board of Patent Appeals
and Interferences in order to establish inventive acts which will prove who among the
parties has the earliest date of invention. Pravel, supra note 12, at 798. As a result of
an interference proceeding, the length of time for prosecuting the patent
applications involved is extended by the length of time it takes to resolve the interference.
Id.
25. 35 U.S.C. § 141 (1988) (allowing applicants dissatisfied with decision of
Board of Appeals to appeal to United States Court of Appeals for the Federal
Circuit).
FORDHAMINTERNATIONALLA WJOURNAL
In 1966, the U.S. Presidential Commission on the Patent
System extensively studied the U.S. patent system and made
thirty-five specific recommendations for significant changes in
U.S. patent practice. The recommendations included the
adoption of a first-to-file system." Such a system was
supported by the Patent Office and subsequently considered by
the U.S. Congress. 4 Widespread opposition from industry
and legal associations led Congress to reject the first-to-file
system.3 5 Commentators and practitioners who opposed
adopting a first-to-file system argued that a first-to-invent
system was inherently more fair than a first-to-file system because
it awards the patent to the true inventor and it gives both large
and small entities the incentive to innovate.3 6 The few
commentators who favored a first-to-file system argued that it was
much more efficient than the first-to-invent system because of
the availability and decisiveness of the application filing date. 7
Although dormant for nearly twenty-five years, the debate over
whether the United States should adopt a first-to-file system
recently has gained intensity because of increased efforts to
harmonize international patent law.3 8
B. Movement Toward InternationalHarmonization of Patent Law
International harmonization of patent law will simplify
and expedite an inventor's ability to obtain worldwide patent
protection and will strengthen such protection once granted.3 9
The major advantages associated with international
harmonization of patent law include reduced costs in obtaining patent
protection internationally, the reduction of costs associated
with defending a patent, better enforcement of patent
protection worldwide, and general simplification of patent rules.4"
Efforts towards international harmonization of patent law
began in 1984 under the direction of the World Intellectual
Property Organization (the "WIPO"). 4 1 Since that time, the
WIPO has convened a committee of experts in numerous
meetings with the objective of drafting a treaty for the
international harmonization of patent law.42 U.S. government and
private sector officials have participated actively throughout
these discussions, which culminated in 1990 with a Draft
Treaty for patent law harmonization.43
The Draft Treaty was reviewed in June 1991 during the
first session of a diplomatic conference to discuss the
harmonization treaty.44 The second and final session of the
conference is scheduled to be held from July 12 to July 30, 1993. 45
Although no decisions were made at the first session, many of
the provisions of the treaty were discussed.46 One of the main
issues remaining unresolved is the question of whether the
United States will convert to a first-to-file system as the
proposed treaty requires.47 As a result of U.S. resistance to
adopting a first-to-file system, other countries objected to
many of the provisions of the Draft Treaty that had been
included as accommodations for particular features of U.S.
patent law.48 Indeed, some countries suggested that those
provisions be removed entirely from the Draft Treaty.49
Some of the provisions in the Draft Treaty that would
directly affect U.S. patent law if adopted by the United States are
of particular importance to the priority of invention issue.
One such provision provides for a first-to-file system of
determining priority of invention. 50 Another provision, which is
the result of the efforts of U.S. negotiators in the WIPO patent
law harmonization committee meetings, mandates that all
patent systems subject to the Draft Treaty recognize an
international grace period for allowing an applicant to file a patent
application. 5' This provision allows an inventor to file an
application within twelve months after public disclosure of his
invention without affecting the patentability of his invention.5 2
The grace period incorporated into the Draft Treaty extends
only to acts of public disclosure made by the inventor or
another party who obtains the disclosed information directly or
indirectly from the inventor.53 Therefore, the grace period
does not apply if a third party independently discloses the
invention to the public.5 4
Another provision that is of particular importance to the
first-to-file issue is the prior user rights provision.5 5 This
provision provides a limited defense against patent infringement
claims to a person who, in good faith, for the purposes of his
enterprise or business, before the filing date of the patent
application, was using the invention or making substantial
prepa48. Id.
49. Id.
50. See Draft Treaty, supra note 9, art. 9.
51. Id. art. 12. This provision provides for an international grace period that
allows certain disclosures of an invention without affecting its patentability. Id.
52. Id.
53. Id.
54. Id.
55. Id. art. 20. The prior user rights provision of the Draft Treaty enables a
prior user of a patented invention to raise a defense to a claim of patent infringement
if certain specified conditions are met. Id. One of the conditions requires that the
prior user must have, in good faith, used the invention or made serious preparations
for use of the invention before the effective filing date of the application for the
patent that claims the invention. Id.
ration for such use.56 Thus, the "prior user" will have the
right to continue using the invention, for the purposes of the
user's enterprise or business, despite the existence of
another's patent.
Other provisions relating to the first-to-file issue concern
the publication of the patent application 58 and the twenty-year
patent term.59 The Draft Treaty also recognizes a "doctrine of
equivalents," 60 which provides for an equitable determination
of the scope of patent protection on the basis of numerous
factors rather than relying solely on the literal words of the patent
claims. 6 Few other countries besides the United States
currently recognize such a doctrine in their patent systems.6 2
At the conclusion of the first session of the diplomatic
conference, the prospect of U.S. participation in the proposed
harmonization treaty had become more remote than before the
conference was held.6"
Unless the United States is willing to
adopt a first-to-file system, it is unlikely that the other
participants in the treaty negotiations will permit inclusion of
provisions that the United States is seeking.6 4 Without these
provisions, the United States will not have any incentive to
participate in the proposed harmonization treaty.6 5 In addition, it is
56. Id.
57. Id.
58. Id. art. 15. This provision requires publication of the patent application
after 18 months from the effective filing date. Id.
59. Id. art. 22. This provision provides for a 20-year patent term starting from
the filing date of the application on which the patent is granted. Id.
60. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608
(1950). The test for the "doctrine of equivalents" in the United States, promulgated
in Graver Tank, is whether the defendant's invention "performs substantially the same
function in substantially the same way to obtain [substantially] the same result" as the
patentee's invention. Id.
61. Draft Treaty, supra note 9, art. 21. This provision of the Draft Treaty
provides that claims are to be interpreted in light of the description and drawings, and
shall not be interpreted as being confined to their strict literal meaning. Id. In
addition, the provision provides that an element shall be considered as being equivalent
to one expressed in a claim if (i) the element performs substantially the same
function in substantially the same way and produced substantially the same result as the
element expressed in the claim, or (ii) it is obvious to one skilled in the art that the
same result as that achieved by means of the element as expressed in the claim can be
achieved by means of the equivalent element. Id.
62. Pravel, supra note 12, at 807.
63. See CONFERENCE REPORT, supra note 9, at 14.
64. Id.
65. Id.
696 FORDHAMINTERNATIONAL LI WJOURNAL
likely that other countries who have an interest in these
provisions will also hesitate to participate in any resulting treaty,
thus diminishing the prospect of patent law harmonization.6 6
Recent efforts towards global harmonization of patent
laws have increased U.S. interest in examining its own patent
system to determine its effectiveness and consistency with
evolving international norms. 67 As a result, in 1990 the
Secretary of Commerce formed an Advisory Commission to examine
the need for any reform of the U.S. patent system. 6 8 On
September 14, 1992, after a series of meetings and a period of
public comment, the Chairman of the Commission presented a
200-page report to the Secretary of Commerce addressing
fifteen broad issues and making specific recommendations
regarding each issue. 69 The Commission recommended that the
United States adopt a first-to-file system contingent upon
reaching a global patent law harmonization treaty that, on
balance, provides an overall benefit to U.S. interests.7 0 Adoption
of the first-to-file system would be subject to certain conditions
that would provide a simple and inexpensive means for
establishing priority of invention.7 1 Such conditions would also
make it easier for all inventors to gain access to the patent
system.7 2
1. The Provisional Application
One of the conditions specified by the Commission
involves the adoption of a low-cost, simplified provisional patent
application. 73 Under the current U.S. patent application
procedure, the patent application requires a specification with
claims to define the invention,7 4 any necessary drawings, 75 a
formal oath or declaration for inventorship nomination,76 and
a filing fee." The Patent Office assigns a filing date to a patent
application even though it initially does not include an oath or
declaration or the application filing fee. 78 The oath or
declaration and the filing fee must be filed subsequently, however,
within a time limit set by the Patent Office. 79 This oath or
declaration and filing fee must be accompanied by the requisite
surcharge for delayed filing.80
As part of a U.S. first-to-file system, the Commission
recommends that a provisional application procedure be
adopted.8s This procedure would permit applicants to obtain
early filing dates at reduced costs with minimum formal
application requirements."s The provisional application procedure
would allow the Patent Office to assign a filing date to the
provisional application before all the formal requirements of a
complete application are actually met.8 3 Therefore, the
provisional application would allow inventors to claim a right of
priority for a subsequently-filed complete application based on
the filing date of the provisional application.8 4
This low-cost provisional application would allow
inventors to receive a filing date without including claims 85 to
define the invention and without including a formal oath or
declaration.86 The provisional application, however, would have
to satisfy existing statutory description and enablement
requirements.87 Submission of the oath or declaration and the
claims would not be required until the inventor filed a
complete application.88 To preserve the original filing date, the
completed application would have to be filed within twelve
months of filing the first provisional application.8 9 During this
twelve-month period, the applicant could meet all regular
application requirements by completing the missing elements of
the provisional application.90
If the previously filed provisional application already
meets all the regular application requirements, the provisional
application becomes a complete application when the
applicant pays the regular filing fee.9' The applicant also has the
option of consolidating one or more provisional applications
filed for the same invention, during the twelve-month period,
into one complete application. 92 Under the provisional
application scheme, applicants are entitled to claim priority for the
subject matter disclosed in the complete application back to
the filing date of the first provisional application that properly
discloses that subject matter.93
2. The Grace Period
Under current U.S. patent law, if an inventor publishes
details of his invention and then subsequently files a patent
application for the invention, that publication will not bar the
inventor from obtaining a patent in the United States, provided the
patent application is filed within one year of the publication. 94
Furthermore, if a third party publishes a disclosure of the same
invention within one year before the application filing date,
that publication will not be a bar to obtaining a patent in the
United States, provided the inventor provides an affidavit
establishing a date of invention prior to the date of that
disclosure.95 The provision of a grace period in U.S. patent law is of
extreme importance to the scientific community in facilitating
early dissemination of research results without forfeiting the
right to obtain a patent for inventions. 96 The grace period also
protects entities that possess limited resources by allowing
them to validate the commercial viability of an invention for a
period of time after publication or public disclosure of the
invention before making significant expenditures towards
obtaining patent protection.9 7
Few other countries provide inventors with grace period
protection.98 In most countries, any publication or disclosure
of an invention, either by a third party or by the inventor
before a patent application is filed, will result in denial of a
patent. 99 This situation has caused many U.S. inventors to
forfeit their patent rights inadvertently in most other countries
when they publish or disclose their inventions before filing
patent applications outside the United States.'0 0
The Commission recommends that if the United States
adopts a first-to-file system, it should retain a public disclosure
grace period. 0 1 This grace period would allow an inventor to
disclose an invention publicly without affecting its
patentability, provided the invention is claimed in an application filed
within twelve months of the disclosure. 10 2 The grace period
would apply to applications filed by an inventor either in the
United States or in any other country that participates in the
harmonization treaty.10 3 The grace period would also apply to
the inventor's application when publication of the invention is
made by a third party who derives the invention either directly
or indirectly from the original inventor."°4 Application of the
grace period in this respect prevents attempts by third parties
to "spoil" the patent rights of the true inventor.' 0 5
3. Prior User Rights
Prior user rights provisions, which provide a limited
defense against infringement claims, are common in many
firstto-file systems.' 1 6 These provisions are applied in situations
where prior user defendants can establish commercial use, or
substantial preparation for such use, of the patented invention
before the effective filing date of the application for patent. 10 7
Although prior user rights are currently authorized in the
Draft Treaty, 10 8 they do not exist in current U.S. patent law
because they are not necessary.
In the United States, if a prior user is the first inventor
and has not abandoned, suppressed, or concealed the
invention, he or she can invalidate the later filed patent of another
person who is claiming infringement. 10 9 In a first-to-file
system, however, priority is based on the filing of the patent
application.1 0 Thus, without a prior user right, a prior user is
unable to continue using the independently developed invention
if someone else obtains a patent for the same invention."'
With a prior user right, if prior users can establish sufficient
pre-filing activity, they will be permitted to continue such use
despite the presence of another's patent, subject to specific
limitations on the extent of that use." .2 One such limitation
involves restricting the right created by the prior use to
continuation of only the particular activity that gives rise to the
right. " 13
The Commission recommends that the prior user right
should exist as a personal defense to infringement claims by an
invention's patentee as part of the adoption of a first-to-file
system." 4 As proposed by the Commission, the prior user
right should be based on six elements." 5 First, the activity of
the prior user must be in the United States and must be prior
to the earliest filing to which the relevant claims of the patent
are entitled." 6 Second, the activity must be without derivation
from the patentee.' '7 Third, the prior user must establish
actual use or substantial preparation for such use." 8 Fourth,
only the particular scope of activity of the prior user may
continue," 9 although the volume of the activity is not limited. 120
Fifth, the prior user rights are personal in nature, and are not
transferable.' 2' Sixth, prior user rights would be an equitable
defense to a charge of patent infringement. 22 The equitable
nature of the prior user rights proposed by the Commission
would allow a court, where appropriate, to assess appropriate
and reasonable royalties in favor of the patentee, or to expand
111. See COMMISSION REPORT, supra note 1, at 48-49 (discussing prior user
rights generally).
112. Id. at 48.
113. Id. at 50.
114. Id.
115. Id. at 50-51.
116. Id. at 50.
117. Id. The activity must have been based upon the independent development
of the person claiming the prior use, without derivation from the person who owns
the original patent. Id.
118. Id.
119. Id. The prior user cannot materially alter future additions of the product
or service that gave rise to the right. Id.
120. Id. The prior user may reasonably expand the amount of use to meet
reasonable market demands within the United States. Id.
121. Id. at 50-51.
122. Id. at 51.
702 FORDHAMINTERNATIONAL LI WJOURNAL
the right to assure an equitable result.'I"
II. CONFLICTING VIEWS OF WHETHER THE UNITED
STATES SHOULD ADOPT A FIRST TO FILE SYSTEM
Various arguments have been raised both for and against
adopting a first-to-file system since the recommendation to
adopt a first-to-file system in the United States was formally
introduced by the 1966 Presidential Commission on the Patent
System. 12 4 Commentators and practitioners opposed to
adopting a first-to-file system maintain that first-to-invent is an
inherently fairer system because it rewards the original
inventor and has served the United States well for over 150 years.' 2 5
Proponents of first-to-file argue that it should be adopted
because it is a much more efficient system and will enable the
United States to participate in and benefit from the proposed
patent law harmonization treaty. 26
A. Arguments Against Adopting a First-to-FileSystem
One of the leading arguments advanced by those opposed
to adopting a first-to-file priority system is that small entities
would be placed at a disadvantage in the "race to the Patent
Office."' 127 This result would occur because of the limited
resources available to small entities for preparing and filing
patent applications. 12 Under the first-to-invent system, once
inventors conceive an invention, they can proceed diligently to
reduce the invention to practice without rushing to file a patent
application. 12 9 Even if someone else files a patent application
first, the first inventor will be entitled to the patent on the
in123. Id.
124. See supra note 12 and accompanying text (citing various commentators' and
practitioners' arguments for and against adopting first-to-file system).
125. COMMISSION REPORT, supra note 1, at 43 (discussing arguments raised for
maintaining a first-to-invent system); see Conley, supra note 12, at 782-85 (same);
Macedo, supra note 12, at 224-28 (same).
126. See Pravel, supra note 12, at 802-08 (discussing arguments for adopting a
first-to-file system); Macedo, supra note 12, at 218-22 (discussing arguments raised
for adopting a first-to-file system); COMMISSION REPORT supra note 1 at 43-44;
(discussing arguments raised for adopting a first-to-file system).
127. Conley, supra note 12, at 785-86; COMMISSION REPORT, supra note 1, at 43.
128. Conley, supra note 12, at 785-86; COMMISSION REPORT, supra note 1, at 43.
129. 35 U.S.C. § 102(g) (1988); see supra note 21 (setting forth pertinent text of
statute); see also supra note 23 and accompanying text (defining "reduction to
practice" of invention).
vention.13 0
With a first-to-file system, however, once inventors
conceive an invention, it is in their best interest to file a patent
application as soon as possible in order to preserve their
patent rights.' 3 ' If a later inventor files a patent application
before the original inventor, the first-to-file system grants the
patent to the former.' 3 2 Thus, small entities are at a
disadvantage because unlike large, well-financed corporations, they
cannot afford to prepare and file patent applications
immediately.'13 In addition, small entities may need time to develop
and prove their inventions to help attract the necessary
financing to pay for application costs.' 3 4
Critics of the first-to-file system also argue that the
opportunity to explore commercialization possibilities prior to filing
a patent application is reduced with such a system because of
the importance of early filing.' 3 5 By determining the
commercial viability of an invention, inventors are in a better position
to decide whether to incur the costs associated with obtaining a
patent on the invention.'3 6 With the first-to-invent system,
inventors have time to make this determination while they are
reducing the invention to practice.' 3 7 In a first-to-file system,
however, inventors cannot delay filing a patent application,
and therefore must immediately determine whether to incur
the costs associated with preparing and filing a patent
application.' 8 If, while an inventor is exploring commercialization
possibilities, another inventor files an application for that same
invention, the original inventor will lose his patent rights and
the second inventor receive the patent.'3 9
130. 35 U.S.C. § 102(g) (1988).
131. See Conley, supra note 12, at 785-86 (discussing effects of first-to-file
system).
132. Pravel, supra note 12, at 800.
133. See Conley, supra note 12, at 785-86 (discussing effects of first-to-file
system on small entities).
134. Id. at 783.
135. COMMISSION REPORT, supra note 1, at 43.
136. See Conley, supra note 12, at 783 (discussing how many inventors hope to
attract financing from others to pay for application costs). The cost of a patent
application can vary from as low as US$2500 to about US$50,000 depending on the
complexity of the application. Id. at 783 n.13.
137. Id. at 783-84.
138. Id. at 786.
139. Id. at 785-86.
FORDHAMINTERNATIONALLA
WJOURNAL
Critics of first-to-file also argue that such a system would
foster premature and sketchy disclosures in hastily-filed patent
applications, resulting in a decline in the quality of
applications.140 This argument is based on the premise that, in order
to establish an early priority date, inventors will rush to file
applications on the basis of bare concepts before the
inventions are fully developed.' 4' Critics of the first-to-file system
also contend that the Patent Office will be burdened with an
increased volume of patent applications filed for defensive
purposes, many of which will contain unpatentable and inoperable
inventions.1 4 2 This argument is founded on the belief that
time constraints will deter inventors from conducting prior art
searches or from properly distinguishing the invention from
any prior art found, and also will impede the development
necessary to prove that the invention is operable.143 In addition, a
first-to-file system would necessitate filing more applications in
order to fully protect the invention as development
proceeds. 4' 4
Opponents of first-to-file also argue that such a system will
result in an increased likelihood of malpractice suits against
patent attorneys who fail to prepare and file patent
applications immediately upon the inventor's disclosure of the
invention. '4 This circumstance would occur if someone else files an
application for the same invention, after the attorney receives
the disclosure from the inventor but before the attorney files
an application. Under the first-to-invent system, patent
attor140. See Dunner, supra note 12, at 563 (discussing arguments against switching
to first-to-file system).
141. See Conley, supra note 12, at 788 (discussing how overall quality of patent
application would decrease due to filing applications prematurely).
142. Id.
143. Id. A prior art search is conducted to determine whether the invention is
patentable over previously known subject matter that would render the invention
obvious at the time it was made to a person having ordinary skill in the art to which
the invention pertains. See 35 U.S.C. § 103 (1988) (stating that if, at time invention
was made, subject matter sought to be patented would have been obvious to person
having ordinary skill in art to which subject matter pertains, invention is not
patentable). Prior art searches are also used to reveal any prior knowledge, use, sale,
publication, or prior invention which cause a loss of right to a patent for the invention. See
35 U.S.C. § 102 (1988) (citing statutory bars such as prior use, sale, publication, etc.
which prohibit someone from obtaining patent).
144. Conley, supra note 12, at 787.
145. Id. at 786; see Macedo, supra note 12, at 222-23 (discussing adverse effects
on attorneys resulting from converting to first-to-file system).
neys can depend upon diligence in preparation of the
application to protect themselves against possible malpractice
charges.' 46 Diligence cannot be depended upon in a
first-tofile system because it is not a factor in determining priority of
invention.'47 In a first-to-file system, the application filing date
alone is determinative; the patent attorney's diligence in
preparing the application is immaterial. 48
Finally, critics of the first-to-file system argue that
abandoning the current first-to-invent system in order to participate
in the proposed harmonization treaty is not justified, because
harmonization will provide only limited advantages to a small
segment of U.S. patent system users.' 49 This contention rests
on the belief that the only real beneficiaries of the
harmonization treaty in the United States will be large multinational
corporations who want to improve their competitive positions in
other countries.'5 0 Critics further argue that first-to-file will
result in a reduction of patents issued to small entities due to
their limited ability to prepare and file patent applications
promptly.' 5' With the number of patented inventions
reduced, U.S. inventors also will receive fewer international
patents, thus limiting their ability to market their inventions
outside the United States. 52
B. Arguments in Favor of Adopting a First-to-FileSystem
As a basis for their arguments favoring the adoption of a
first-to-file system, proponents point out that many users of
146. See Conley, supra note 12, at 786; see 35 U.S.C. § 102 (g) (1988) (providing
that factor to consider in determining priority of invention is reasonable diligence of
one who was first to conceive invention and last to reduce it to practice, which can be
either by actual construction of invention or filing of patent application).
147. See Frost, supra note 34, at 925 (discussing how patent application filing
date is sole determining factor in first-to-file system when deciding which of two rival
inventors is entitled to patent).
148. Id.
149. See Conley, supra note 12, at 794-95 (arguing that real purpose of many
proponents of first-to-file, such as multinational companies, is to get other countries
to change their laws in order to improve patent protection available in those
countries).
150. Id. at 794.
151. See COMMISSION REPORT, supra note 1, at 43 (discussing objections to
firstto-file raised by members of public); see also Conley, supra note 12, at 786-87
(discussing how adoption of first-to-file would result in fewer patents to small entities).
152. Conley, supra note 12, at 794.
706 FORDHAMINTERNATIONAL LAWJOURNAL
the U.S. patent system and most of U.S. industry are currently
acting on a de facto first-to-file basis both outside the United
States and within the United States.- 3 This de facto
first-tofile system is mainly attributable to efforts by inventors to
avoid forfeiture of patent rights outside the United States
through pre-filing disclosures of inventions.1 54 U.S. inventors
with global commercial interests must file patent applications
as early as possible in order to insure that their patent rights
are protected in other nations that operate under first-to-file
systems. 155 Commonly, first-to-file systems will bar an
applicant from obtaining a patent on an invention that was
disclosed to the public before the filing date of the application.' 56
In addition, non-U.S. entities, which account for slightly less
than half of all U.S. patents, already operate in a first-to-file
mode in the United States because of practices in their home
57
countries.
The U.S. patent system is also considered a de facto
firstto-file system because it provides a strong but rebuttable
presumption that an invention is made on the date the patent
application is filed.'5 " In order to prove invention prior to the
application filing date, in interference proceedings or
infringement litigations, inventors must meet stringent standards of
proof.'5 9 Such standards require inventors to prove
conception, diligence, and reduction to practice. 160 Thus, inventors
will usually file patent applications promptly to avoid the
numerous obstacles associated with proving an earlier invention
date and to reap the many practical benefits that early filing
confers. ' 6 '
More than 99.9% of the patent applications that are
currently filed in the United States raise no dispute as to the
identity of the inventor. 162 Proponents of first-to-file argue that,
with regard to inventors losing priority of invention to other
inventors, these statistics clearly indicate that there would be
no significant difference in result between a first-to-file system
and a first-to-invent system. 163 Moreover, proponents of
firstto-file argue that when a dispute as to the identity of the first
inventor does arise, the party who filed first prevails in a
significant majority of the interference proceedings that follow."
This outcome stems from the heavy burden of proof that the
party who filed second must meet in order to prove
conception, diligence, and reduction to practice. 165
Commentators argue that even when interference
proceedings do arise, a first-to-file system would greatly decrease
the complexity, length, and expenses usually associated with
such proceedings. 166 Under the current first-to-invent system,
the costs of an interference proceeding may run into the
hundreds of thousands of U.S. dollars, 67 and can delay the
issuance of a patent for many years.' 68 Small entities are
particularly vulnerable in interference proceedings, not only because
of the enormous costs involved, but because many do not have
the resources or a sufficiently sophisticated understanding of
patent law to keep the journals and records necessary to prove
the date of their invention. 69 Commentators argue that a
firstto-file system would eliminate this cost and complexity by
substituting a fair, simple, and inexpensive means by which
prior
708 FORDHAMINTERNATIONALLAWJOURNAL
ity of invention would be readily determined on the basis of
the filing date of the application. 170 This legally fixed date of
priority of invention would eliminate the uncertainties
associated with interferences and would provide greater reliability
for U.S. patents. 17
Proponents of a first-to-file system also state that adoption
of such a system would encourage early filing worldwide, so
that U.S. patent rights are not forfeited. 72 Since there is no
grace period in most non-U.S. first-to-invent systems, many
times either a third party's or a U.S. inventor's own publication
of his invention before filing an application will bar obtaining a
patent.17 3 The current first-to-invent system does not
encourage U.S. inventors to file promptly. 174 Therefore,
proponents of the first-to-file system argue that the first-to-invent
system hurts the competitiveness of U.S. industry because U.S.
inventors' patent rights are forfeited in other countries when
there are disclosures of their inventions in any publications.17 5
In addition, proponents of first-to-file maintain that
encouraging inventors to file early would accelerate the
innovation process and promote early public disclosure of
inventions. 76 The objective of the U.S. patent system as set forth in
the U.S. Constitution is to "promote the Progress of Science
and useful Arts."' 177 This objective is accomplished by
granting to inventors limited monopolies in exchange for full and
complete disclosure of their inventions, thus advancing the
state of the art and giving the public a chance to use the
invention. 178
Under the current first-to-invent system, a first inventor
who fails to develop and disclose the invention promptly
170. Macedo, supra note 12, at 215-19; COMMISSION REPORT, supra note 1, at 44.
171. COMMISSION REPORT, supra note 1, at 54; Dunner, supra note 12, at 563.
172. COMMISSION REPORT, supra note 1, at 44.
173. Id. at 47; Pravel, supra note 12 at 806-07.
174. COMMISSION REPORT, supra note 1, at 53.
175. Id.
176. Id.; see Macedo, supra note 12, at 225 (arguing that since goal of patent law
is to encourage disclosure of inventions, it may be just as reasonable to grant patent
to first person to disclose invention as it would to grant patent to first inventor).
177. U.S. CoNsT. art. I, § 8, ci. 8. The U.S. Constitution grants Congress the
power "[t]o promote the Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their respective Writings and
Discoveries." Id.
178. Macedo, supra note 12, at 225.
would be granted a patent over a later independent inventor
who is prepared to develop, manufacture, and market the
invention immediately. 79 Proponents of first-to-file maintain
that a first-to-file system, unlike the first-to-invent system,
would reward an inventor for initiating the process of bringing
that invention to public availability by promptly filing an
application for the invention. 8 0 This effect is consistent with the
ultimate goal of the patent system to encourage speedy
disclosure of inventions.' 8 '
Finally, proponents of first-to-file urge the United States
to adopt such a system so that the United States will be in a
better position to participate in the proposed harmonization
treaty.8 2 Participation in the treaty would enable the United
States to attain needed improvements in the patent systems of
other countries. 8 3 One important benefit that the
harmonization treaty would provide to the United States is a grace period
provision that presently does not exist in most other
countries. 8 " This provision would help protect U.S. inventors
against their own disclosures prior to filing for a patent.8 5
Proponents of first-to-file argue that the international grace
period provision should serve as a significant incentive to
encourage the United States to adopt a first-to-file system. 8 6
The proposed harmonization treaty would also bring
another important change to non-U.S. patent law. The treaty
would recognize a "doctrine of equivalents,"' I8 7 which is a
benefit available in the United States but not available in most
179. See supra note 21 and accompanying text (setting forth statutory basis for
determining priority of invention).
180. Macedo, supra note 12, at 225.
181. See generally HILDRETH, supra note 24, at 2 (describing how disclosure of
invention promotes progress of science and benefits public).
182. See Pravel, supra note 12, at 806-08 (advocating United States adoption of
first-to-file system in order to gain advantages of harmonization treaty).
183. COMMISSION REPORT, supra note 1, at 54.
184. Draft Treaty, supra note 9, art. 12; see supra notes 94-100 and accompanying
text (discussing grace period).
185. See Commission Report, supra note 1, at 47 (discussing how absence of
grace period outside United States has caused many inventors to inadvertently forfeit
their non-U.S. patent rights by publishing or otherwise publicly disclosing their
inventions).
186. Pravel, supra note 12, at 807.
187. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950).
710 FORDHAMINTERNATIONAL LAWJOURNAL
other countries.""8 This doctrine provides for an equitable
determination as to the scope of patent protection based on
numerous factors rather than relying solely on the literal words of
the patent claims.'8 9 As this doctrine is unavailable in most
countries other than the United States, non-U.S. patents are
often so restricted in their protection that they are of
insignificant value.' 90 The proposed harmonization treaty, however,
would provide some measure of equivalency, thereby
broadening the scope of non-U.S. patent protection."9 ' Additional
advantages associated with the adoption of a harmonization
treaty include the reduction of costs in obtaining patent
protection internationally, reduction of costs associated with
defending a patent, better enforcement of patent protection
worldwide, and the simplification of international patent
law.' 92
III. THE UNITED STATES SHOULD ADOPT A
FIRST-TOFILE SYSTEM UNDER THE CONDITIONS
SPECIFIEDIN THE 1992 REPORT FROM
THE ADVISORY COMMISSION
ON PATENT LA W REFORM
The United States should no longer hesitate to adopt a
first-to-file system of establishing priority of invention. The
Commission's recommendations outline a carefully balanced
approach that reflects a consensus among the various affected
groups and that will enable the United States to participate in
the proposed harmonization treaty. 93 The harmonization
treaty will enable the United States to obtain significant
improvements in the patent systems of other countries and in
turn will benefit all U.S. inventors. In addition, the
harmonization treaty will provide a simplified and less expensive means
of obtaining international patent protection. 94
188. Pravel, supra note 12, at 807.
189. See supra note 60 and accompanying text (discussing test for doctrine of
equivalents in the United States); see also supra note 74 and accompanying text
(discussing purpose of claims).
190. Pravel, supra note 12, at 807.
191. Draft Treaty, supra note 9, art. 21.
192. See Macedo, supra note 12, at 229 (discussing advantages of
harmonization).
193. COMMISSION REPORT, supra note 1, at 11.
194. Macedo, supra note 12, at 229-30.
A. The Advisory Commission's Recommendations Eliminate the
Perceived Disadvantagesof a First-to-FileSystem
In outlining an approach that will make a first-to-file
system acceptable in the United States, the Advisory Commission
obtained extensive public input to identify what problems may
exist with adopting a first-to-file system. 95 This public input
was an essential factor in identifying the perceived
disadvantages of adopting a first-to-file system, and in deciding which
course of action would be most appropriate for the United
States to pursue.'9 6 The Advisory Commission addressed
these disadvantages during its tenure and has made
recommendations that, if implemented, would eliminate the
perceived disadvantages of adopting a first-to-file system.
1. Small Entities Will Not Be Disadvantaged
Commentators and practitioners opposed to adopting a
first-to-file system contend that such a system would hurt
independent inventors and small companies due to their limited
available resources to file an application with the Patent Office
promptly. 97 It is argued that small entities would be at a
disadvantage because unlike large, well-financed corporations,
they may need time to develop and prove their inventions in
order to help attract the necessary financing to pay for the
application costs.' 9 8 Those entities and individuals with limited
resources would have limited access to the Patent Office,
resulting in reduced incentive for independent inventors and
small businesses to innovate and to apply for patents.' 99
The provisional application that the Advisory Commission
recommends, however, would eliminate these disadvantages
by providing a simple and relatively inexpensive method of
establishing an early priority date for the subject matter that the
application discloses .200 The provisional application's
minimum requirements would allow most inventors to file the
application themselves, or with minimal assistance from patent
195. COMMISSION REPORT, supra note 1, at 5, 43-44.
196. Id.
197. See Conley, supra note 12, at 785 (discussing adverse effects of first-to-file
system).
198. Id. at 783.
199. Id. at 786-87.
200. COMMISSION REPORT, supra note 1, at 46.
practitioners, and thus would make the Patent Office more
accessible to everyone.2 ° '
The provisional application procedure is actually more
advantageous than the current first-to-invent system with respect
to the problem of attracting necessary financing. Once the
provisional application is filed, applicants would have twelve
months to file complete applications meeting all regular
application requirements. 20 2 During this twelve-month period,
applicants could work solely on obtaining any financing that they
may need to continue prosecuting applications. Under the
first-to-invent system, however, once inventors conceive an
invention, they must work with reasonable diligence to reduce
the invention to practice in order to preserve the priority date
as of the date of conception.2 °3 Attempting to secure financing
for an invention does not constitute reasonable diligence in
reducing an invention to practice.2 4 Therefore, under the
firstto-invent system, if inventors work solely towards securing
financing after they conceive the invention, but do not work
diligently towards reducing the invention to practice, they lose the
conception priority date.20 5 Thus, by using the provisional
application procedure, small entities would not be at a
disadvantage if a first-to-file system were adopted.
2. Opportunities to Explore Commercialization Possibilities
Will Not Be Reduced
Opponents of first-to-file also claim that such a system
201. See id. at 11 (discussing how provisional applications would increase access
to patent system for all inventors).
202. Id. at 46.
203. 35 U.S.C. § 102(g) (1988); see supra note 21 (setting forth text of statute).
204. See Griffith v. Kanamaru, 816 F.2d 624 (Fed. Cir. 1987) (holding that
attempt to finance experimentation does not constitute diligence). Courts may
consider the reasonable everyday problems and limitations encountered by an inventor
in reducing an invention to practice. Id. at 626. "Diligence can be shown only when
the inventor has concentrated attention on the reduction to practice to the
substantial exclusion of work on other conceptions." Frost, supra note 34, at 938. "[A]n
inventor is either diligent at a given time or he is not diligent; there are no degrees of
diligence." MPEP, supra note 23, ch. 715.07(a). "A man may be diligent within the
meaning of the patent law when he is doing nothing, if his lack of activity is excused."
Id.
205. See 35 U.S.C. § 102(g) (1988) (requiring that in determining priority of
invention reasonable diligence of first to conceive and last to reduce to practice will be
considered); see also supra note 21 and accompanying text (setting forth pertinent text
of statute).
reduces opportunities to explore commercialization
possibilities prior to filing.20 6 In a first-to-file system, inventors must
file patent applications promptly in order to preserve an early
priority filing date. Therefore, it is claimed, inventors under a
first-to-file system are unable to make a well-considered
determination of whether the invention merits incurring the costs
associated with preparing and filing a formal application. 0 7
This problem, however, would be eliminated with the
provisional application procedure. The provisional application
would give applicants a full year to determine whether to
proceed with the expense of filing a formal, complete application
for their inventions, while preserving their priority date as of
the date that the provisional application was filed.208 In
addition, a grace period provision under the first-to-file system
would allow applicants to publish or publicly disclose the
invention for a one year period without prejudice.2 0 9 This grace
period would allow inventors to validate the commercial
viability of an invention by finding a prospective licensee, before
making any significant financial commitment toward obtaining
patent protection.21 0
3. The Quality of Patent Applications Will Not Be Reduced
and the Quantity of Patent Applications Will Not
Significantly Increase
Those opposed to adopting a first-to-file system argue that
such a system would foster premature and sketchy disclosures
in hastily-filed patent applications, reducing the overall quality
of applications .2 1 1 The provisional application system negates
this concern by enabling an inventor to file an application
early, preserve his or her right of priority to the invention, and
then take a full year to complete the requisites of a complete
application.21 2 Because provisional applications are not to be
examined by the Patent Office until they are converted to
com206. COMMISSION REPORT, supra note 1, at 43.
207. See Conley, supra note 12, at 785-86 (describing how first-to-file would
force inventors to make hasty decisions regarding whether to file applications).
208. COMMISSION REPORT, supra note 1, at 46.
209. Id. at 47.
210. Id.
211. Conley, supra note 12, at 788.
212. COMMISSION REPORT, supra note 1, at 53.
714 FORDHAMINTERNATIONALLAWJOURNAL
plete applications, this one-year period actually makes it easier
than the first-to-invent system to provide thorough and
complete patent applications prior to their examination. 213 In
addition, the statutory requirements for a full written description
and enablement of the claimed invention 2 14 would continue to
apply in the same substantive manner in a U.S. first-to-file
system under the provisional application procedure.215
Therefore, insufficient disclosure would not be a concern in the
adoption of such a system. Because those requirements would
continue to apply and the same professionals now preparing
applications would also be preparing applications under a
firstttoem-filweosyusldte mre,suitltisihnigahplpyliucnatliiokenlsy othfaitnfceorniovrerqtiunaglittyo. 2s1u6ch a
sys
In addition, adopting a first-to-file system would not
significantly increase the number of patent applications filed in
the Patent Office. Critics of first-to-file contend that adopting
such a system would increase the number of patent
applications filed for defensive purposes. 2 17 They also contend that
more applications would be filed in order to fully cover the
invention as development proceeds. 2 "8 This argument
concerns primarily large entities such as corporations, not at
individual inventors.21 9 Many U.S. inventors, however,
particularly large corporations, are already operating under a de facto
first-to-file system. 220 These inventors must file early in order
to protect their patent rights in countries that operate under
first-to-file systems. 22' Therefore, the number of applications
filed under a first-to-file system would not increase to an
overburdening level because the filing practices of many inventors
will not change dramatically under such a system.222
Even if the number of applications filed does increase
213. Id.
214. See 35 U.S.C. § 112 (1988) (setting forth statutory requirements for full
written description of invention in such clear, concise, and exact terms as to enable
any person skilled in art to which it pertains to make and use same); see supra note 87
and accompanying text (explaining enablement requirements of 35 U.S.C. § 112).
215. COMMISSION REPORT, supra note 1, at 53.
216. Dunner, supra note 12, at 564.
217. COMMISSION REPORT, supra note 1, at 43.
218. Conley, supra note 12, at 787.
219. Dunner, supra note 12, at 564.
220. Id.
221. COMMISSION REPORT, supra note 1, at 53.
222. Id.
somewhat with the adoption of a first-to-file system, the
burden on the Patent Office will not increase proportionately
under the system proposed by the Commission. Any increase
in patent applications likely will result from applicants filing
more than one provisional application to encompass fully all
aspects of their inventions.223 One or more provisional
applications covering the invention eventually will be consolidated
into one complete application. 24 Under the provisional
application procedure, the examination of applications does not
begin until the application is complete.225 It is the examination
of applications that actually burdens the Patent Office due to
the time and effort involved in such examinations. 226
Therefore, the only additional burden on the Patent Office under the
provisional application procedure will be filing additional
applications, not examining additional applications.
4. Malpractice Suits Against Patent Attorneys Will
Not Increase
Those opposed to first-to-file also cite an increased
likelihood of malpractice suits against patent attorneys as a reason
not to adopt such a system. 27 This situation would occur
where an attorney fails to prepare and file an application
immediately upon disclosure of the invention from the inventor,
thus resulting in a loss of priority to another inventor who files
first.228 Where time is of the essence in filing an application,
an attorney undoubtedly has a duty to file promptly. This
responsibility of reasonable diligence, however, encompasses the
same effort that is required of an attorney preparing an
application today.229
223. See id. at 46 (discussing that under provisional application procedure,
applicants could file one or more provisional applications and then consolidate them into
one complete application).
224. Id.
225. Id.
226. See Macedo, supra note 12, at 221 n.149 (discussing how average time to
process patent application in 1986 was 22 months).
227. See Conley, supra note 12, at 786 (discussing possible malpractice if
attorney does not file application promptly); see also Macedo, supra note 12, at 222-23
(discussing adverse effects on attorneys resulting from adoption of first-to-file
system).
228. Conley, supra note 12, at 786.
229. See id. (discussing how under current first-to-invent system, reasonable
diligence in preparation of application will protect attorney from charge of malpractice).
The amount of time necessary for a reasonably diligent
attorney to file an application can vary, depending on the nature
and complexity of the application. The provisional
application, however, provides a simplified application procedure that
greatly reduces the amount of time necessary to file an
application.23° Therefore, in most instances, a patent attorney will be
able to file an application soon after disclosure from an
inventor, and no significant delays will occur that might result in an
inventor losing priority of invention to another applicant who
files earlier.
Attorneys may nevertheless protect themselves from
possible malpractice situations by informing clients of how long it
will be before they can actually file an application. This
information will allow the clients to decide if they wish to find
another attorney who can prepare and file an application in less
time. Also, the onus of prompt filing will not fall entirely on
the attorney preparing the application. The attorney's ability
to prepare and to file an application promptly will depend
primarily upon the client providing the information needed to file
the application in a timely manner. In addition, due to the
simplified nature of the provisional application, inventors will
always have the option of preparing and filing the provisional
application pro se, with minimal assistance from an attorney if
necessary.23
By providing a simple and inexpensive means for
establishing priority of invention, the first-to-file system proposed
by the Commission effectively addresses the concerns of
commentators and practitioners who are opposed to adopting such
a system. If adopted, the Commission's recommendations will
make the patent system more accessible to all inventors,
including small businesses and individual inventors.232 The
proposed system will also reduce the time and expense of
obtaining patents by providing a readily determinable date of
priority, and will help protect U.S. inventors' rights in other
countries by encouraging early filing.233
230. See COMMISSION REPORT, supra note 1, at 46 (discussing advantages of
provisional application procedure).
231. See id. at 45-46 (describing simplified nature of provisional application).
232. COMMISSION REPORT, supra note 1, at 11.
233. Id. at 53-54 (discussing considerations of some advantages of adopting
first-to-file system).
B. Harmonization Will Provide Benefits to All U.S. Inventors
Harmonization of patent law will strengthen international
patent protection and will make acquisition of patents more
simple and uniform. 234 Adoption of a first-to-file system will
place the United States in a better position to participate in the
upcoming patent harmonization treaty. 235 Participation in the
harmonization treaty will provide U.S. inventors with stronger
international patent protection and increased international
market potential for their inventions." 6
A clear indication that many practitioners feel
harmonization will benefit U.S. inventors is the recent movement towards
converting to a first-to-file system if a favorable harmonization
treaty is concluded.23 7 The prospect of harmonization has
caused commentators and practitioners who once steadfastly
disapproved of a first-to-file system to rethink their positions
and lean towards the adoption of such a system contingent
upon a harmonization treaty that provides overall benefits to
the United States. 238 The U.S. Congress has responded to this
movement by introducing legislation that would convert U.S.
patent law to a first-to-file system.2 3 9 This recent widespread
approval of adoption of a first-to-file system, after the notion's
rejection for over twenty-five years, is directly attributable to
234. Pravel, supra note 12, at 813.
235. COMMISSION REPORT, supra note 1, at 54.
236. See CONFERENCE REPORT, supra note 9, at 14 (discussing unforseeability of
United States' participation in harmonization treaty absent U.S. adoption of
first-tofile system).
237. See Pravel, supra note 12, at 800-01 (stating that primary reason United
States is considering adopting first-to-file system is proposed harmonization treaty).
238. Conferences: ABA Takes Stand Against CAFC Practiceof Vacating Invalidity
Rulings As Moot, [May-Oct.] Pat. Trademark & Copyright J. (BNA) No. 1096, at 458. At
the American Bar Association (ABA) annual meeting in 1991, the Patent, Trademark
and Copyright (PTC) Section adopted a resolution favoring first-to-file if other
countries' laws are changed to the benefit of U.S. patent applicants. Id. at 459. At the
1992 annual meeting the ABA-PTC passed a resolution to reaffirm the Section's
current position and to recommend rescission of two resolutions adopted by the ABA
House of Delegates in 1967. Id. Those 1967 resolutions, which were prompted by a
recommendation of the 1966 Presidential Commission on the Patent System to adopt
a first-to-file system, opposed changing to a first-to-file system. Id.; see Macedo, supra
note 12, at 195-96 (discussing industry and patent bar opposition to
recommendation of 1966 Commission to adopt first-to-file system).
239. S. 2605, 102d Cong., 2d Sess. (1992); H.R. 4978, 102d Cong., 2d Sess.
(1992) (proposing amending U.S. patent law to harmonize with other countries'
patent systems).
the many benefits that patent law harmonization can confer on
U.S. inventors.240
Although harmonization of patent laws will enable U.S.
patent applicants to gain rights that are unavailable under
present non-U.S. patent laws, those opposed to adopting a
first-to-file system have said that harmonization would only
benefit large corporations with international interests and thus
does not justify changing the current U.S. patent system. 24'
Actually, however, by adopting a first-to-file system, the United
States will obtain needed improvements in the patent systems
of other countries through the successful completion of a
favorable harmonization treaty that will help all U.S.
inventors. 24 2
For those who currently seek patent protection for their
inventions in countries other than the United States,
harmonization will make the acquisition of non-U.S. patents more
uniform and simple, reduce the costs of obtaining patent
protection internationally, reduce the costs associated with defending
a patent, and provide better enforcement of patent protection
worldwide.243 In addition, harmonization would provide
substantive improvements in international patent law that will
preserve and strengthen U.S. inventors' patent protection in other
countries. 2 "
One such improvement is the provision of a grace
period. 245 The current absence of an international grace period
is a significant detriment to U.S. inventors because it results in
the loss of patent rights outside the United States.246
Incorporating such a grace period in the harmonization treaty in which
the United States participates would be extremely beneficial to
240. See Pravel, supra note 12, at 800-01 (discussing harmonization treaty as
primary reason U.S. is considering adoption of first-to-file system).
241. See Conley, supra note 12, at 786-87 (discussing how adoption of first-to-file
system would reduce incentive of independent inventors and small businesses to
innovate and file patent applications).
242. See Pravel, supra note 12, at 813 (discussing improvements in patent laws
that would result from harmonization).
243. See Macedo, supra note 12, at 228-30 (discussing advantages of
harmonization).
244. See Pravel, supra note 12, at 806-08 (discussing advantages of
harmonization).
245. Draft Treaty, supra note 9, art. 12; see supra notes 94-105 (discussing grace
period).
246. COMMISSION REPORT, supra note 1, at 47.
PA TENT L4 W HARMONIZATION
U.S. inventors. Another important substantive improvement
that harmonization would provide is the recognition of a
doctrine of equivalents.247 Recognition of such a doctrine will
significantly broaden the scope of international patent protection
and thus increase the value of non-U.S. patents.248
For inventors who would not normally seek non-U.S.
patent protection because of the complicated procedures and the
costs involved, harmonization will make such protection more
accessible and more affordable for all U.S. entities, large and
small.249 International patent protection recently has gained
importance in the United States because of the growth of
nonU.S. markets that have become more accessible such as the
former Soviet Union and Eastern Europe.25 ° In light of this
increased market potential, individual inventors or small
companies that may not have considered marketing or licensing their
products internationally in the past are more likely to do so in
the future. Harmonization of patent laws will enable all U.S.
inventors more easily to expand their markets internationally,
thereby increasing the overall competitiveness of U.S. industry
internationally.251 With proper international patent
protection, a net technology exporter like the United States will
receive significant economic benefits.252
CONCLUSION
The recommendations of the 1992 Advisory Commission
on Patent Law Reform present a favorable solution to the
firstto-file debate that removes many of the perceived
disadvantages associated with converting to such a system. The
Commission's approach to adoption of a first-to-file system will
make the Patent Office more accessible to all inventors, and
will not significantly change the practices of those who
currently use the U.S. patent system. By adopting a first-to-file
247. Draft Treaty, supra note 9, art. 21; see supra note 60 and accompanying text
(discussing doctrine of equivalents).
248. See Pravel, supra note 12, at 807 (discussing how due to lack of doctrine of
equivalents in other countries, non-U.S. patents are often so restricted in their
protection that they are of insignificant or no value).
249. Id. at 813 (discussing improvements in patent laws that would result from
harmonization).
250. Id.
251. Id.
252. Macedo, supra note 12, at 230-31.
system, the United States will be able to participate in the
forthcoming patent law harmonization treaty that will simplify
and expedite the acquisition of strong worldwide patent
protection. Participation in the treaty will allow the United States
to attain significant improvements in the patent systems of
other countries that will benefit all U.S. inventors.
* J.D. Candidate, 1995, Fordham University.
26. 35 U.S.C. § 146 ( 1988 ) (allowing party to interference dissatisfied with decision of Board of Appeals to have remedy by civil action).
27. See supra note 7 (discussing only countries that currently still use first-toinvent system).
28. COMMISSION REPORT, supra note 1 , at 43 n.2.
29. Id .
30. Id .
31. Canadian Patent Act of Nov. 19 , 1987 , R.S.C. ch. P- 4 ( 1988 ) ; see Robert A. Wilkes, The Canadian Viewpoint: A New PerspectiveBridging the First-to-Inventand First-toFile Worlds, 18 AM . INTELL. PROP. L. ASS'N QJ . 18 ( 1990 ) (comparing Canada's newly adopted first-to-file patent system to previously existing first-to-invent system).
32. COMMISSION REPORT, supra note 1 , at 5.
33. Id .
34. S. 1691 , 90th Cong., 1st Sess . ( 1967 ); H.R. 5924 , 90th Cong., 1st Sess . ( 1967 ); See George E. Frost, The 1967 PatentLaw Debate- - First- to-Inventvs. First-to- File , 1967 DUKE LJ . 923 ( 1967 ).
35. See Frank Pugsley, President'sStatement on PatentRevision Before House Committee , 1967 AM. PAT. L. ASs'N BULL . 281 (American Patent Law Association was precursor of American Intellectual Property Law Association); 22 CONG. Q. WKLY. REP . 932 ( June 2 , 1967 ) (statement of Edward F. McKie, Jr ., Chairman-Elect of American Bar Association's Section on Patent, Trademark and Copyright Law).
36. See , e.g., Frost, supra note 34 , at 926-29 ( discussing advantages of first-toinvent system in comparative analysis of first-to-file and first-to-invent systems ); Conley, supra note 12, at 782-85 ( discussing advantages of first-to-invent system).
37. See Frost, supra note 34 , at 925-26 ( discussing advantages of first-to-file system).
38. See COMMISSION REPORT, supra note 1 , at 43 ( discussing how due to harmonization efforts, first-to-file has again become dominant issue in discussions regarding patent law reform).
39. CONFERENCE REPORT, supra note 9 , at 12.
40. See Macedo, supra note 12 , at 229-30 (discussing advantages of international harmonization).
41. Convention Establishing the World Intellectual Property Organization, July 14 , 1967 , 21 U.S.T. 1770 , 828 U.N.T.S. 3. The World Intellectual Property Organization [hereinafter WIPO] is a specialized organ of the United Nations that is responsible for intellectual property matters and is charged with the administration of international intellectual property conventions . Id . The objectives of the WIPO are "to promote the protection of intellectual property throughout the world through cooperation among States and, where appropriate, in collaboration with any other international organization," and "to ensure administrative cooperation among the Unions." Id. art. 3 , 21 U.S.T. at 1772 , 828 U.N.T.S. at 11.
42. CONFERENCE REPORT, supra note 9 , at 1.
43. Draft Treaty, supra note 9.
44. See CONFERENCE REPORT, supra note 9, at 1 (discussing first session of WIPO Diplomatic Conference held at The Hague) .
45. Edward G. Fiorito , Analysis ofSelected Recommendations ofAdvisory Commission on PatentLaw Reform , [May-Oct.] Pat. Trademark & CopyrightJ. (BNA) No. 1097, at 502 (Sept. 17 , 1992 ) (discussing second session of WIPO Diplomatic Conference ).
46. See CONFERENCE REPORT, supra note 9 , at 4-12 ( discussing each Draft Treaty article that was considered during first session).
47. Id . at 12.
94. 35 U.S.C. § 102 (b) ( 1988 ) (barring patent protection for invention if it was patented or described in printed publication in United States or country outside United States or if it was in public use or on sale in United States more than one year prior to date of patent application).
95. See 37 C.F.R . § 1 .131 ( 1992 ) (allowing submission of affidavit or declaration of prior invention to overcome cited patent or publication).
96. COMMISSION REPORT, supra note 1 , at 47.
97. Id .
98. Id .
99. Id . For example, publication or public use in Great Britain prior to the filing date bars one from obtaining a patent in Great Britain . Patents Act of 1949 , 12 , 13 & 14 Geo. 6, ch. 87 , § 32 . The only other countries that independently apply any type of grace period protection are Belgium, Australia, Japan, Brazil and the former Soviet Union . See Karen M. Curesky , Note, InternationalPatent Harmonization Through WLP. 0.: An Analysis of the U.S. ProposalTo Adopt a "First-To-File" Patent System , 21 LAw & POL'Y INT'L Bus . 289 , 298 ( 1989 ).
100. COMMISSION REPORT, supra note 1 , at 47.